United States District Court, D. Delaware
[Copyrighted Material Omitted]
Steven J. Balick, Esquire, Tiffany Geyer Lydon, Esquire, and Andrew C. Mayo, Esquire of Ashby & Geddes, Wilmington, Delaware. Counsel for Plaintiff. Of Gregory P. Casimer, Esquire, A. Justin Poplin, Esquire, and Hissan Anis, Esquire of Lathrop & Gage LLP.
Jack B. Blumenfeld, Esquire, Julia Heaney, Esquire, and Paul Saindon, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendant.
Sue L. Robinson, District Judge.
On July 12, 2011, plaintiff Motivation Innovations, LLC (" plaintiff" ) filed a complaint alleging patent infringement against defendant Ulta Salon, Cosmetics & Fragrance, Inc. (" defendant" ) alleging infringement of U.S. Patent No. 5,612,527 (" the '527 patent" ). (D.I. 1) Defendant's motion to dismiss the complaint was denied and plaintiff's request to amend was granted on May 17, 2012. (D.I. 16; D.I. 32) Plaintiff filed an amended complaint on May 16, 2012, which defendant answered on June 4, 2012, asserting affirmative defenses and counterclaims of invalidity and non-infringement. (D.I. 31; D.I. 41) Plaintiff answered the counterclaims on June 20, 2012. (D.I. 48)
Plaintiff is a Delaware corporation with a principal place of business in Boca Raton, Florida. (D.I. 32 at ¶ 2) Defendant is a company organized and existing under the laws of the State of Delaware and with a principal place of business in Bolingbrook, Illinios. (D.I. 32 at ¶ 5)
Presently before the court are several motions by defendant: a motion for summary judgment of invalidity (D.I. 153) and non-infringement (D.I. 157), as well as a motion to preclude the testimony of plaintiff's expert (D.I. 133). The court has jurisdiction over this matter pursuant to 28 U.S.C. § 1338(a).
II. STANDARD OF REVIEW
" The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A party asserting that a fact cannot be--or, alternatively, is--genuinely disputed must support the assertion either by citing to " particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials," or by " showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then " come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The court will " draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).
To defeat a motion for summary judgment, the non-moving party must " do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment " must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue" ) (internal quotation marks omitted). Although the " mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment," a factual dispute is genuine where " the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). " If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (stating entry of summary judgment is mandated " against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial" ).
A. '527 Patent
The '527 patent discloses and claims methods for redeeming discount offers by
associating a machine-readable identification code, such as a barcode, with data identifying items to be offered at a discount. The data is stored in a database in memory, and the discount is provided for those items for which data is listed in the database. (4:9-32) Independent claim 1 recites:
A method for redeeming discount offers comprising:
providing a circulation medium and providing said medium with indicia which includes a machine readable identification code;
causing said medium to be distributed to potential users;
associating said identification code with data identifying items which are to be offered at a discount provided as part of said medium and storing said data in memory in a data base so as to be addressable by said identification code;
providing means for reading said identification code provided with said circulation medium;
providing means associated with said code reading means for tabulating sales of items so that any discount corresponding to an item listed in said data is deducted from the price of the item in the tabulation; and
using said reading means to identify said code provided with said medium and using said means for tabulating items to obtain a price for the involved item and to cause a discount to be debited against the purchased item if the involved item is listed as part of said data identifying an item as qualifying for a discount as called for by the data base data defined by the identification code of the medium.
(9:7-30) Independent claim 17 recites:
A method of tracking customer purchasing ...